BRAZIL Law and Practice Contributed by: Ana Paula Affonso Brito and Maria Eduarda de O Borrelli Junqueira, Montaury Pimenta, Machado & Vieira de Mello
infringer(s). It is important to highlight, however, that the licence agreement must be recorded with the Brazilian Patent and Trademark Office (BPTO) to have an effect on third parties. Patent nullity actions As to patent nullity actions, Article 56 of the Brazilian Industrial Property Act foresees that these can be filed before a federal court by the BPTO or by any legitimately interested party, at any time during the patent validity term. Nullity actions are usually filed by those who have been sued in a state court for patent infringement or who have received a cease-and-desist letter from the patentee, to refrain from using the pro - tected technology. This is because an invalidity declaration by the court will have retroactive (ex tunc) effects from the date of the patent applica - tion’s filing with the BPTO – which means that should a patent be declared invalid, it will be as if it has never existed, and no infringement con - demnation may be declared on a parallel ongo - ing infringement action. There are also technologies where protection by patent may put a segment of society at risk, such as pharmaceutical patents, generating greater flexibility for the judge in gauging the legitimate interest of the plaintiff in the nullity action. In a recent case (REsp No 1332417/RS decision issued on 20 June 2024), the Brazilian Superior Court of Justice ( Superior Tribunal de Justiça , or STJ) confirmed its understanding that it is possible to argue the nullity of a patent or of a design as a defence against an infringement lawsuit before the state court in Brazil. The issue had already been analysed by the court in 2020, when the Third Panel of the STJ decided, within the scope of lawsuit REsp No 1.843.507/SP, that although the invalidity claim
of a patent has to be addressed to a federal court, the Brazilian IP Act would expressly allow the defendant the possibility to invoke nullity in an infringement action, as a matter of defence, without the need for the BPTO to participate in the lawsuit (Article 56, § 1º of the LPI). The decision issued on 20 June 2024 standard - ises the case law and explicitly states that the consequence of a declaration of invalidity of an industrial design or patent as a defence strategy against an infringement lawsuit is limited to par - ties involved in the lawsuit. This means that the state court’s ruling is con - fined to the infringement case in which it arises, dealing solely with disputes between private parties without the participation of the BPTO. Thus, such decision does not constitute the formal revocation of the patent or utility model involved and will not cause general effects (erga omnes) or impact on its validity before third par - ties. 1.2 Defendants/Other Parties to an Action In life science/pharma cases, the manufacturer is generally sued for infringement, as the supplier of the whole chain, although in the case of phar - maceuticals produced outside Brazil (generally generics), the importer is generally the one who will be sued. Thus, it is seen as more efficient to target the person that started the infringement or the one who has launched the product and given rise to it, as the patentee will be able to seek to cease the infringement at the “roots”. While the infringement action takes place between private parties in the state court, the nullity action may be filed by anyone with a legitimate interest against the patentee and the BPTO, in the federal courts, in accordance with
21
CHAMBERS.COM
Powered by FlippingBook